Yoriko KAWARATANI et al.

Patent Trials and Appeals Board

Nov 6, 2020

13729631 - (D) (P.T.A.B. Nov. 6, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/729,631 12/28/2012 Yoriko KAWARATANI 408048US99 1141
22850 7590 11/06/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HELM, CARALYNNE E
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
11/06/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YORIKO KAWARATANI and HY SI BUI

Appeal 2020-002113
Application 13/729,631
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
ULRIKE W. JENKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 2–5, 7, 8, 12, 19, 20, and 29 under 35
U.S.C. § 103(a) as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as L’Oréal of
Paris, France. Appeal Br. 1.
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STATEMENT OF THE CASE
An oral hearing was held October 1, 2020. A transcript of the hearing
will be entered into the record in due course.
The Examiner rejected claims 2–5, 7, 8, 12, 19, 20, and 29 in the Final
Office Action under pre-AIA U.S.C. § 103(a) as obvious in view of Yu (US
2006/0292096 A1, published Dec. 28, 2006) (“Yu”), Barba et al. (US
2012/0100089 A1, published Apr. 26, 2012) (English equivalent of PCT
Application filed Dec. 2, 2009) (“Barba”), and Manelski et al. (US
2008/0031834 A1, published Feb. 7, 2008) (“Manelski”). Final Act. 3.
Claim 20, the only independent claim on appeal, is reproduced below
(bracketed numbers have been added for a reference to the limitations in the
claim).
20. A composition comprising [1] 10% to 50% by weight of the
total weight of the composition of at least one volatile oil, [2]
0.5% to 50% by weight of the total weight of the composition
of at least one polypropylsilsesquioxane and [3] 0.005% to 5%
by weight of the total weight of the composition of at least one
acrylic film forming agent selected from the group consisting of
(1) a copolymer consisting of acrylic acid, isobutyl acrylate and
isobornyl acetate, (2) poly(isobornyl methacrylate- co-isobornyl
acrylate-co-isobutyl acrylate-co-acrylic acid), and mixtures
thereof,
wherein the [2] polypropylsilsesquioxane to [3] acrylic
film forming agent weight ratio is at least 7:1.

REJECTION
The Examiner found that Yu describes a cosmetic composition
comprising [1] a volatile oil, [2] polypropylsilsesquioxane; and [3] an acrylic
film forming agent, the same components present in rejected claim 20. Final
Act. 3.
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The volatile oil is described by Yu as a solvent (¶¶ 38, 40, 41) present
in amounts which overlap with the claimed amount of [1] “10% to 50% by
weight of the total weight of the composition”:
The at least one solvent will typically be present in the
composition of the invention in an amount of from 10 to 90%
by weight, preferably from 20 to 80% by weight, more
preferably from 30 to 70% by weight, and more preferably from
40 to 70% by weight, based on the weight of the composition.
Yu ¶ 45.
The Examiner also found that Manelski also describes an amount of a
volatile oil in a cosmetic composition that falls within the claimed amount.
Final Act. 4.
Yu also describes the [2] polypropylsilsesquioxane component of
claim 20 (¶ 6) in an amount which overlaps with claimed amount of “0.5%
to 50% by weight of the total weight of the composition”:
The film forming polypropylsilsesquioxane resin may be
present in an amount ranging from 0.5 to 80% by weight,
preferably from 5 to 70% by weight, more preferably from 10
to 50% by weight, more preferably from 15 to 40% by weight,
and more preferably from 20 to 30% by weight, based on the
weight of the total composition.
Yu ¶ 36.
Yu describes the third component of claim 20, [3] an acrylic forming
agent:
The composition according to the invention may also
contain at least one additional film-forming polymer chosen
from liposoluble or lipodispersible film-forming polymers and
mixtures thereof.
Yu ¶ 64.
The liposoluble homopolymers and copolymers may be chosen
from those obtained from monomers chosen from the group
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consisting of isooctyl(meth)acrylate, isononyl(meth)acrylate, 2-
ethylhexyl(meth)acrylate, lauryl(meth)acrylate,
isopentyl(meth)acrylate, n-butyl(meth)acrylate,
isobutyl(meth)acrylate, tert-butyl(meth)acrylate,
tridecyl(meth)acrylate and stearyl(meth)acrylate, or mixtures
thereof. Examples that will be mentioned include the alkyl
acrylate/cycloalkyl acrylate copolymer sold by PHOENIX
CHEM under the name GIOVAREZ AC-5099 ML.
Yu ¶ 67.
The amount of the claimed [3] acrylic forming agent present in Yu is
in an amount which overlaps with the claimed amount of “0.005% to 5% by
weight of the total weight of the composition”:
In general, the composition according to the invention
may comprise from 0.1 to 30% by weight, preferably from 0.5
to 20% by weight, and more preferably from 1 to 15% by
weight (expressed as solids), based on the weight of the
composition, of a film-forming polymer and especially a
lipodispersible film-forming polymer.
Yu ¶ 106.
The Examiner found that Yu does not describe the specific acrylate
copolymers recited in claim 20, but found that Barba describes a cosmetic
composition comprising a silsesquioxane polymer and a film-forming
copolymer which is the same acrylic film forming copolymer recited in
claim 20. Final Act. 4. The Examiner determined it would have been
obvious to have used the acrylate copolymer of Barba “because it had
already been used as a film forming polymer in conjunction with a
silsesquioxane polymer [the same type of polymer recited in claim 20] in a
lip cosmetic demonstrating its suitability in this role in a lip cosmetic like
that of Yu et al.” Id. at 5.
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The claim recites that “the [2] polypropylsilsesquioxane to [3] acrylic
film forming agent weight ratio is at least 7:1.” Appeal Br. 7. The Examiner
found that the overlapping percentage amounts of components [2] and [3] in
Yu would give rise to a ratio between these components which overlaps with
the claimed ratio, making the claimed ratio prima facie obvious. Final Act.
5; Ans. 4–5.
DISCUSSION
Appellant argues that Yu does not teach that the ratio of [2]
polypropylsilsesquioxane to [3] acrylic film forming agent is a “result-
effective ratio.” Appeal Br. 3.
This argument is not persuasive. As shown above, Yu teaches
amounts of components [2] and [3] that overlap with the claimed amounts,
and, therefore, when combined, would result in a ratio that at least overlaps
with claimed ratio of 7:1. It is well established that, when there is a range
disclosed in the prior art, and the claimed range overlaps or falls within that
range, there is a presumption of obviousness. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003). Appellant did not identify a defect in this reasoning
set forth by the Examiner.
As to Appellant’s argument that the cited prior art does not disclose
that the ratio is result-effective, Yu teaches that its cosmetic composition
comprising polypropylsilsesquioxane and an acrylic film forming agent
“provides a more flexible, homogeneous, and less rigid film on the
keratinous material resulting in comfortable, and extended wear.” Yu ¶ 15.
Yu also teaches the need for a stable composition (Yu ¶ 4), the same need
identified by Appellant that its invention is said to satisfy (Appeal Br. 3).
Thus, the skilled worker would have routinely optimized the amounts of
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each component to achieve the desired properties described in Yu. “[It] is
not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). As held in
Peterson, there is a “normal desire of scientists or artisans to improve upon
what is already generally known.” Peterson, 315 F.3d at 1329–30.
Appellant also argues “that examples 3 and 4 in Barba contain much
more acrylic polymer than silicone resin (about a 5:1 ratio of acrylic
polymer to silicone resin). In stark contrast, the present invention requires
the presence of significantly more polypropylsilsesquioxane than specified
acrylic/acrylate film forming agent.” Appeal Br. 3 (emphasis omitted). This
argument is not persuasive because the Examiner relied upon Yu to reach
the claimed ratio, not Barba. Yu’s composition comprises different
components than those in Barba, and, consequently, in view of this
difference, the Examiner did not rely on Barba to meet the 7:1 ratio
limitation of claim 20.
Appellant provided a Declaration under 37 C.F.R. § 1.132 by Hy Bui,
a co-inventor of the patent application in this appeal (“Bui Declaration” or
“Bui Decl.”) to establish “unexpected results.” A showing of “unexpected
results” can be used to demonstrate the non-obviousness of the claimed
invention. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“One way for a
patent applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill
in the relevant art would have found surprising or unexpected.”).
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Appellant contends the Bui Declaration “demonstrates the criticality
of the claimed ratios – outside of these ratios, unacceptable compositions
result.” Appeal Br. 4.
The Bui Declaration describes experiments “involving the
combination of polypropylsilsesquioxane (Tresin) and acrylic/acrylate film
forming agent (Synamer 3),” corresponding to components [2] and [3],
respectively. Bui Decl. ¶ 4. Mr. Bui looked at the bulk appearance and
cosmetic application of the combination of [2] and [3]. Mr. Bui provided a
chart summarizing the results. A portion of the chart is reproduced below
(the calculated ratios between the Tresin and Synamer 3 has been added to
the top because they did not appear in the original document; only the
percentages were shown).

Mr. Bui explains that “an approximately 5:1 ratio (83:17) results in a
composition with gel and coagulation properties, as well as separation.” Bui
Decl. ¶ 5. Mr. Bui further explains that “the lower the ratio goes (moving
left to right on the chart), the thicker the composition becomes, making the
composition less acceptable for its intended purposes (for example, making
the composition harder to apply with less appealing application properties).”
Id. Mr. Bui also states that “when polypropylsilsesquioxane (Tresin) and
acrylic/acrylate film forming agent (Synamer 3) were present in ratios of
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about 2:1 [calculated to be 1.86:1] to about 5:1 [calculated to be 4.81:1], the
compositions were not stable (separation occurs).” Id.
Mr. Bui states that “[i]t was surprising that adding more
propylsilsesquioxane to achieve ratios of 7:1 or greater resulted in better,
more stable compositions (less separation). I would have expected
increasing the ratio to 7:1 or above to result in increasing composition
instability (separation) given the results at 2:1 to 5:1 ratios.” Bui Decl. ¶ 6.
The Examiner found the Bui Declaration unpersuasive because the
claims require three components: [1] a volatile oil, [2]
polypropylsilsesquioxane, and [3] an acrylic film forming agent. However,
the Examiner noted that the experiments in the Bui Declaration only
described a result using two components: [2] polypropylsilsesquioxane and
[3] an acrylic film forming agent. Thus, the Examiner found that Appellant
did not establish that a composition within the scope of claim 20 had been
tested. The Examiner explained that it is not clear whether the outcomes
reported in the chart would be the same if [1] a volatile oil is present in the
composition. Ans. 5–6. The Examiner further stated that “exclusion of a
required component and lack of any commentary on the impact of the
missing ingredient on the composition makes drawing conclusions about the
criticality of the claimed range of polypropylsilsesquioxane to acrylic
polymer film forming polymer in the composition impossible.” Id. at 6.
Appellant responds to the Examiner that the Synamer-3 is “a
commercial product which was known to contain 50% solvent, 50% solid.”
Reply Br. 1. However, Appellant neither identified the solvent present in
Synamer-3 nor established that the solvent is a “volatile oil” present in the
claimed amounts. Appellant did not even identify the specific polymer
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present in Syamer-3. Bui Declaration is silent on this point.
We agree with the Examiner’s determination that Bui Declaration is
insufficient to show the nonobviousness of the claimed subject matter. As
determined by the Examiner, Appellant did not establish that the
compositions tested in the Bui Declaration fall within the scope of the claim.
Specifically, it was not established that the composition tested by Mr. Bui
comprised a [3] volatile oil in the claimed amounts. The chart, provided by
Mr. Bui and reproduced above, does not even test a composition with the
claimed 7:1 ratio. Therefore, the results are not probative of unexpected
results because the tests were not performed on a composition within the
scope of claim 20. Appellant did not explain how a composition outside the
scope of the claim is sufficient to establish unexpected results for
compositions that fall within the claim scope. In view of Mr. Bui’s assertion
that the result “was surprising and unexpected, and could not have been
predicted” (Bui Decl. ¶ 6), we agree with the Examiner that it could not have
been predicted how composition with a volatile oil in the claimed amounts
would behave in the tests performed by Mr. Bui.
The Examiner also noted that only one film-forming agent within the
scope of the claim was tested in the Bui Declaration and that no reason is
provided by Appellant as to “why one would predict the ‘unexpected’
outcome of the tested polymer to be recapitulated when a different acrylic
polymer film forming polymer is employed.” Ans. 6. Thus, the Examiner
concluded that “the showing is not commensurate in scope with the claims
in multiple ways and is insufficient.” Id. Unexpected results must be
“commensurate in scope with the degree of protection sought by the claimed
subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
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Appellant provided no response in the Reply Brief to the Examiner’s
determination which we find to be supported factually.
For the foregoing reasons, the obviousness rejection of claim 20 is
affirmed. Claims 2–5, 7, 8, 12, 19, and 29 fall with claim 20 because
separate arguments for their patentability were not provided. 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–5, 7, 8,
12, 19, 20,
29
103(a) Yu, Barba,
Manelski
2–5, 7, 8,
12, 19, 20,
29

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED